WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
New Millennium Building Systems, LLC; Steel Dynamics, Inc. v. Mei Fei, Zheng Hang
Case No. D2018-1459
1. The Parties
The Complainants are New Millennium Building Systems, LLC (the “First Complainant”) of Fort Wayne, Indiana, United States of America (“United States” or “U.S.”); Steel Dynamics, Inc. (the “Second Complainant”) of Fort Wayne, Indiana, United States, represented by Barrett McNagny LLP, United States.
The Respondent is Mei Fei, Zheng Hang of Putian, Fujiang, China.
2. The Domain Name and Registrar
The disputed domain name <versasteelworks.com> is registered with Bizcn.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2018. On July 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 4, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On July 6, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of proceeding.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2018.
The Center appointed Douglas Clark as the sole panelist in this matter on August 16, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The First Complainant, New Millennium Building Systems, is a wholly owned subsidiary of the Second Complainant Steel Dynamics, Inc. Both companies deal in steel products.
One of the ranges of steel and joist products that the First Complainant markets and sells is its “Versa” range of products and services which include Versa-Floor, Versa-Dek, Versa-Wedge and Versa-Clad.
The First Complainant is the owner in the United States and Canada of trademarks incorporating “Versa”, including VERSA-DEK (U.S. Registration No. 2629819, registered on October 8, 2002), VERSA-WEDGE (U.S. Registration No. 3122853, registered on August 1, 2006), and VERSA-DLAD (U.S. Registration No. 3697119, registered on October 13, 2009) (the “VERSA trademarks”). The VERSA trademarks were assigned to the First Complainant by Consolidated Systems, Inc. in 2015.
The Respondent is an individual from Putian, Fujian, China.
The disputed domain name was registered on October 9, 2017.
The website under the disputed domain name resolves to a website that copies the First Complainants website its entirety and also includes the use of trademarks owned by the Second Complainant.
5. Parties’ Contentions
Identical or Confusingly Similar
The Complainants contend that the disputed domain name <versasteelworks.com> and the VERSA trademarks are confusingly similar. The disputed domain name contains VERSA which is the distinctive part of the VERSA trademarks in which the Complainant has rights. The additional English words “steel” and “works” may be disregarded for the purpose of assessment under the first element. Further on the website under the disputed domain name the Respondent used both Complainants’ names and trademarks.
No rights or legitimate Interests
The Respondent has no connection with the Complainants or any of their affiliates and has never sought or obtained any trademark registrations for these related VERSA trademarks. It, therefore, has no rights or legitimate interests in the disputed domain name.
Registered and used in bad faith
The Complainants submit that there is no doubt that before registration of the disputed domain name the Respondent knew of the Complainants’ rights in the VERSA trademarks given the copying of the First Complainant’s website. The Respondent, therefore, acquired the disputed domain name to disrupt the business of the Complainants and to prevent the Complainants from reflecting their marks in a corresponding domain name.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
6.1 Consolidation of Proceedings
The Complainant’s request the proceedings be consolidated to allow both Complainants to bring the complaint together. The Panel does not consider this to be strictly necessary. The Complaint relates to only one disputed domain name and the Complainants are related companies. Nevertheless, the Panel accepts the Complaint as filed.
6.2 Language of the Proceedings
The language of the registration agreement is Chinese.
The Complainant requests that the language of proceedings be English on the grounds that the Complainants do not understand or speak the Chinese language; the website under the disputed domain name is written in English in its entirety; the email address of the Respondent is in English and the obligation to translate all case relevant documents would be an unfair disadvantage to the Complainant.
The Respondent did not respond to this request.
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Center made a preliminary determination to:
(1) accept the Complaint as filed in English;
(2) accept a Response in either English or Chinese;
(3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceedings lies with this Panel, having regard to the circumstances of the administrative proceeding.
The Respondent did not respond to the Center’s preliminary determination.
The website under the disputed domain name was solely written in English indicating the Respondent can do business in English. Further, translating the Complaint would cause unnecessary delays and expense. These factors lead the Panel to determine to follow the Center’s preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English.
6.3 Substantive Issues
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being use in bad faith.
A. Identical or Confusingly Similar
The disputed domain name incorporates the word “versa”, which is the predominant part of the VERSA trademarks in its entirety, with the addition of a descriptive term “steelworks”. The disputed domain name is therefore confusingly similar to the VERSA trademarks in which the First Complainant has rights.
The Panel notes that the Complainants do not have a registered trademark incorporating VERSA in China. However, the ownership of a trademark is generally considered to be a threshold standing issue and “[n]oting in particular the global nature of the Internet and Domain Name System, the jurisdiction(s) where the trademark is valid is not considered relevant to panel assessment under the first element.” (See section 1.1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). In this case, however, the website under the disputed domain name appears to target the United States where the VERSA trademarks in which the Complainants have rights are registered.
The first element of paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
The Respondent has not responded to the Compliant to assert any rights or legitimate interests.
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Respondent has no business or any kind of relationships (licensor, distributor) with the Complainants. The Complainants have made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has not responded to the Complaint to present any evidence to establish rights or legitimate interests. None of the circumstances in paragraph 4(c) of the Policy are present in this case.
Considering the absence of a response by the Respondent and the fact that the Respondent was granted neither a license nor an authorization to make any use of the VERSA trademarks, the Panel finds the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
The second element of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name <versasteelworks.com> was registered in bad faith and is being used in bad faith.
The disputed domain name currently resolves to a webpage that is identical to the First Complainant’s webpage at “www.newmill.com”. The direct copy of the webpage is strong evidence that the Respondent knew of the Complainants and that the disputed domain name was registered with the intention to mislead potential customers and to disrupt the Complainants’ business.
This case falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
Having examined all the circumstances of the case the Panel finds that the Respondent registered and is using the disputed domain in bad faith.
The third part of the paragraph 4(a) of the Policy is therefore satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <versasteelworks.com> be transferred to the First Complainant.
Date: September 3, 2018